NOTIFICATION OF REFUSAL
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification Objections
The title is objected to as follows:
The term “part” is not a clear article of manufacture and is directed to functional or structural features that are of no concern in design patents. Function and structure fall under the realm of utility patent applications. MPEP 1503.01.I. The claim is for a "design substantially as shown and described".
The term “cutters” is inaccurate (MPEP 1503.01.I) because it is directed to more than one article of manufacture. 35 U.S.C. 171 requires designs to be directed to “an article of manufacture," and 35 U.S.C. 112 requires that the claim particularly point out and distinctly claim the subject matter which the applicant regards as his invention.
Therefore, the title must be in the singular, not plural, form. For accuracy, the title should be amended throughout the application, original oath or declaration excepted, to read: - Hand Operated Tile Cutter-.
Amendments to the title, whether directed to the article in which the design is embodied or its environment, must have antecedent basis in the original disclosure and may not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992).
The descriptive statement is objected to as follows:
The current descriptive statement is not permissible in design applications. See MPEP 1503.01 II
No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). The statement could confuse the scope of the current design claim.
The uses of the terms “as carriage device” may lead to confusion as to the subject matter of the claim. Statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted. MPEP §1503.01(II). The design claim is limited to what is shown in the drawings.
Therefore, the statement should be deleted in their entirety.
Claim Refusal - 35 U.S.C. § 112(a) and (b)
The claim is refused under 35 U.S.C. 112(a) and (b) as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling because the claim is not consistently or clearly disclosed.
Specifically:
The disclosure provided is of insufficient quality to ensure that all details in the reproductions are reproducible in the printed patent. The overall resolution of the reproductions is poor, and the lines are not uniformly thick and well defined. The following image is for example purposes only; all reproductions should be addressed.
PNG
media_image1.png
773
1100
media_image1.png
Greyscale
PNG
media_image2.png
911
754
media_image2.png
Greyscale
The exact appearance and three-dimensional configuration of the following elements cannot be understood without resorting to conjecture.
The surfaces and elements shaded and pointed out below in 1.1-1.3 and 1.7:
PNG
media_image3.png
2168
1854
media_image3.png
Greyscale
The surfaces and elements shaded and pointed out below in 1.4:
PNG
media_image4.png
968
762
media_image4.png
Greyscale
The surfaces and elements shaded and pointed out below in 1.5:
PNG
media_image5.png
924
724
media_image5.png
Greyscale
Applicant may attempt to overcome this refusal by indicating that protection is not sought for the indefinite elements by amending the reproductions to convert the indefinite elements to broken lines, thus disclaiming those surfaces. See 37 CFR 1.1026 and Hague Administrative Instructions Section 403.
If applicant chooses to do so, the surface contour shading must be removed as well. An appropriate statement must be added to the specification following the figure descriptions, but prior to the claim, to clearly describe the portions of the claim that form no part thereof. For example, if applicant converts the unclaimed portions to broken lines, the following statement would be acceptable:
--The broken lines depict portions of the Hand Operated Tile Cutter that form no part of the claimed design.--
Discussion of the Merits of the Case:
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or In Person Interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, may be used for this purpose:https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at kayla.bennett@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. Applicants may submit replies to Office actions only by:
• Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources
• Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
• Facsimile to the USPTO's Official Fax Number (571-273-8300)
• Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Conclusion
The claim is refused under 35 U.S.C. 112(a) and (b) as set forth above.
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Number Search” button.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAYLA MARIE BENNETT whose telephone number is (571)272-9590. The examiner can normally be reached Monday-Friday 8:00AM-3:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, Supervisor, Justin Jonaitis can be reached at 571-270-5150. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAYLA MARIE BENNETT/Examiner, Art Unit 2924
Prosecution Insights